[00:00:00] Speaker 02:
INRAE Data Treasury Corp.

[00:00:01] Speaker 02:
As much as we would have liked to have shown you people the diversity of our jurisdiction, that will not happen today, unfortunately.

[00:00:30] Speaker 02:
Okay, Mr. Gilliland, please go ahead and proceed.

[00:00:33] Speaker 00:
May it please the Court.

[00:00:35] Speaker 00:
This final proceeding before the Court, as I'm sure the Court is aware, arises from an ex parte re-examination that was filed against only one of the patents at issue in all of the proceedings, and that being the 988 patent.

[00:00:49] Speaker 00:
The re-examination was directed to 29 specific claims in the patent, and I think they can all be referred to as three-tier claims, because each claim deals with a remote

[00:01:01] Speaker 00:
intermediate and a central tier.

[00:01:03] Speaker 00:
But each claim also has specific claim limitations that have to be satisfied to demonstrate whether or not those claims are obvious, and what the board did in this situation.

[00:01:16] Speaker 01:
In your blue brief, at page 10, you say large banks, such as JP Morgan, Chase Bank, PNC Bank, have confessed in open court that the 988 patent is valid.

[00:01:30] Speaker 01:
Where in the record are those confessions?

[00:01:33] Speaker 00:
Your Honor, looking at the blue brief, I don't see a cite to the joint appendix.

[00:01:37] Speaker 01:
That's why I just asked you the question.

[00:01:39] Speaker 01:
You're the lawyer.

[00:01:40] Speaker 00:
Yeah, I do not believe they're in there, Your Honor, though I do believe that those pleadings are public record and the court could take judicial notice of them or we would be happy to supplement them if the court would like them.

[00:01:51] Speaker 00:
If we had cited them, they should have been in the joint appendix.

[00:01:54] Speaker 00:
Yes, Your Honor.

[00:01:58] Speaker 00:
References at issue in this re-examination primarily consist of, it's a total of six references, but three of them are used somewhat interchangeably to demonstrate what the patent office and the board believe to be the well-known nature of three-tiered network systems.

[00:02:16] Speaker 00:
And those three references are the Cameron reference, the Eccerson reference, and the Weiss reference.

[00:02:22] Speaker 00:
For a set of the claims at issue here, each one of those was combined

[00:02:28] Speaker 00:
in the alternative with additional references to satisfy additional elements required under the claims.

[00:02:34] Speaker 00:
The additional references, of course, were de Lella reference that was cited for the teaching, the alleged teaching of local area networks to connect systems, the Hoover reference, which is a patent filed in May of 95 to teach wide area networks, the gear reference, which was a patent filed in July of 96 that was to teach extracting data

[00:02:58] Speaker 00:
from documents and receipts such as checks.

[00:03:02] Speaker 02:
In your experience, is it unusual to have a five-reference obviousness rejection?

[00:03:06] Speaker 02:
Because for claim 42, well, I'd say it's four references plus they cite stuff in the background of the 988 specs, so it's almost like a five-reference rejection.

[00:03:17] Speaker 02:
When you've got to pick elements from five different references and combine them, is that starting to strain the credibility of the obviousness determination?

[00:03:26] Speaker 00:
Your Honor, in my experience, that is quite a few references to have to combine to reach an obviousness determination.

[00:03:31] Speaker 00:
And I think that goes directly to why data treasury repeatedly argued below that there's no teaching in those references or nothing with all of those references that would cause a person of ordinary skill in the art to decide to pick five separate references, six if you count the statements in the background of the 988 patent, and combine those absent

[00:03:55] Speaker 00:
pure hindsight from having read the 988 patent.

[00:03:59] Speaker 02:
Are they all in basically the same field, though?

[00:04:02] Speaker 02:
All of these references?

[00:04:03] Speaker 00:
They are not, Your Honor.

[00:04:05] Speaker 00:
The Cameron and Weiss references are Department of Defense papers that deal with modifications.

[00:04:12] Speaker 02:
Okay, but how about Erickson, DeLelia, Hoovener, and Gere?

[00:04:17] Speaker 00:
Sure, so Erickson is a publication from a magazine

[00:04:22] Speaker 00:
that appears to have dealt with computer information systems.

[00:04:27] Speaker 02:
But it had a three-tier client server.

[00:04:29] Speaker 02:
There's a picture from it, right?

[00:04:30] Speaker 02:
It's titled three-tier deployment architecture.

[00:04:33] Speaker 00:
And that's the point of Ericsson.

[00:04:35] Speaker 00:
And that's a point that title is indicative of a point for the Ericsson reference is that it discusses three-tier client server architecture.

[00:04:47] Speaker 00:
It does not discuss a system on it.

[00:04:49] Speaker 00:
It's very high level.

[00:04:50] Speaker 00:
It's very superficial.

[00:04:52] Speaker 03:
And in our opinion, with your claims, when they talk about a three tier architecture are also very high level and arguably very superficial.

[00:05:00] Speaker 03:
I mean, I take reliance on Eccerson simply to be evidence of the fact that it was known, very well known, to link three computers together.

[00:05:12] Speaker 00:
Well, Your Honor, I would respectfully disagree that it was very well known.

[00:05:16] Speaker 00:
I think Eccerson itself makes clear that three-tier architecture is cutting edge and has a lot of uncertainties associated with it.

[00:05:23] Speaker 03:
When you say three-tier architecture, am I translating that incorrectly in my mind to really mean linking one computer A to computer B, which is then linked to computer C?

[00:05:37] Speaker 03:
That's what you mean by three-tier architecture?

[00:05:39] Speaker 00:
Your Honor, that is not what I would mean by three-tier architecture.

[00:05:42] Speaker 00:
I think with three-tier architecture, and even described at a high level in Eccerson, and especially as taught by the 988 patent, teaches specific characteristics of each tier so that each tier feeds up to the tier above it in a way that provides

[00:06:00] Speaker 00:
overall higher efficiencies of the computer network.

[00:06:03] Speaker 03:
Okay, I suppose that would be in some of the dependent claims, right?

[00:06:06] Speaker 03:
It's not in the independent claims.

[00:06:08] Speaker 03:
These interesting individualized features of the three computers.

[00:06:12] Speaker 00:
No, I would suggest that they are in the independent claims in the recognition of what a remote, what an intermediate, and what a central subsystem has to be.

[00:06:22] Speaker 01:
But isn't that exactly what Echerson shows in its illustration one?

[00:06:29] Speaker 01:
It's got a mainframe, and then it's got a server level, and then it's got a desktop level.

[00:06:36] Speaker 00:
No, Your Honor, I think that it does show a three-tier architecture, but it does not describe in sufficient detail how to build a three-tiered system where each of those components work together to accomplish a goal.

[00:06:51] Speaker 02:
But did your patent do that?

[00:06:53] Speaker 00:
Yes, Your Honor, I believe the 988 patent does do that where it talks about the remote data processing subsystem.

[00:06:59] Speaker 00:
Its goal is to capture images and extract data from documents and receipts and then that's transmitted within and between but then up to the intermediate system which is described in the figures for the 988 patent.

[00:07:13] Speaker 00:
That's the blue.

[00:07:15] Speaker 03:
But that's what GEER does, right?

[00:07:17] Speaker 03:
GEER captures the transaction data from some documents

[00:07:22] Speaker 00:
Well, GEAR does capture transaction data, but GEAR does not capture like the Claim 46 requires, capturing images of documents and receipts and extracting data there from.

[00:07:38] Speaker 00:
GEAR does not do that.

[00:07:40] Speaker 00:
In GEAR, imaging and the scanning where the data is captured are completely separate elements.

[00:07:46] Speaker 00:
Scanning is identified as element six in the figures, and imaging is simply

[00:07:51] Speaker 00:
taking a bitmap picture and sticking it in a storage file in case somebody needs to look at it later.

[00:07:57] Speaker 00:
So GEER doesn't teach capturing a document and image and extracting data therefrom to then transmit it on through the rest of the system.

[00:08:05] Speaker 00:
That's a shortcoming of GEER.

[00:08:08] Speaker 00:
Now GEER does deal with, to Judge Moore's previous question, it does deal with the banking industry.

[00:08:15] Speaker 00:
The Hoovener reference deals with

[00:08:18] Speaker 00:
credit card transactions, financial transactions, and trying to identify specific individuals or validate a person's identity at a point remote from a database.

[00:08:30] Speaker 00:
And then Delela involves, Delela is an interesting reference in the fact that, if I may back up a little bit, there's a motivation to combine that was cited by the examiner

[00:08:46] Speaker 00:
stated by the examiner without support and then carried forward through the board's decision and repeated by the director.

[00:08:52] Speaker 00:
And that's the statement that the examiner made.

[00:08:55] Speaker 00:
I believe it's at JA 528 of the brief that a person would be motivated to combine all of these references to obtain the efficiencies that can be done by gathering data from images rather than manual entry.

[00:09:11] Speaker 00:
However, Delela, the only reference in here that talks about trying to gather data from images is directed at trying to solve a problem with gathering data directly from images.

[00:09:22] Speaker 00:
And Delela specifically says and points out in column one, and this is at JA5198, and backing up a little bit, the problem that's attempting to be solved by Delela

[00:09:39] Speaker 00:
is for the computers to automatically read the courtesy amount on a check, which is the handwritten dollar amount written on a check.

[00:09:47] Speaker 00:
And the problem that Delela is attempting to solve is, as stated in column one at line 26 to 29, it says, while touching or overlapping numbers on a document can be read routinely by a human operator, such numbers cannot be read accurately by character recognition apparatus.

[00:10:07] Speaker 00:
So that site

[00:10:09] Speaker 00:
And that statement in Delela directly contradicts the unsupported statement made by the examiner of the motivation to combine because gathering data off of the images is more efficient than doing it manually.

[00:10:21] Speaker 00:
Delela even recognizes that at least as of that time.

[00:10:25] Speaker 02:
What, if anything, do you understand the board's argument to be or fact finding to be regarding motivation to combine?

[00:10:32] Speaker 02:
About the only thing I got out of it was it would be more efficient.

[00:10:37] Speaker 02:
for example, check scanning would be more efficient.

[00:10:41] Speaker 02:
I mean, is there something else?

[00:10:43] Speaker 02:
I mean, I realize it's not your position to argue their point clearly.

[00:10:47] Speaker 02:
They'll get to that when they get up.

[00:10:48] Speaker 02:
But I mean, would you like to respond to that?

[00:10:53] Speaker 00:
Well, I think, Your Honor, that's my point with the Delela references.

[00:10:58] Speaker 00:
The only place where there's a specific motivation to combine all these references is in the final office action.

[00:11:06] Speaker 00:
at page 143, it's joint appendix 528, and the examiner says that since gathering data by an imaging subsystem increases the efficiency over previous manual methods of inputting data.

[00:11:21] Speaker 00:
That's the motivation combined.

[00:11:23] Speaker 00:
No citation supporting that sentence, no reference supporting that sentence.

[00:11:27] Speaker 02:
Well, why would they combine Erickson with that when Erickson expressly says building three-tier architecture applications isn't easy and there's relatively little real-world experience to shed light on the process?

[00:11:36] Speaker 00:
And, Your Honor, that goes directly to our point is that those statements and others like it in the Eckerson reference, if anything, teach away from combining these references and would discourage a person of ordinary skill in the art.

[00:11:49] Speaker 00:
Perhaps a person of extraordinary skill might see something in there that they could try, but we don't believe a person of ordinary skill would.

[00:11:56] Speaker 02:
Your time is almost up, but I would like you to take a moment because you have an unusual motion, and I want to give you a second and ask you to address it.

[00:12:03] Speaker 02:
You've made a motion to the court to ask us to cause the government to pay a portion of the fees associated with the production of the appendices.

[00:12:13] Speaker 02:
Would you mind addressing that for a second?

[00:12:15] Speaker 00:
Sure.

[00:12:15] Speaker 00:
I'll briefly address it, Your Honor, and for the most part, we're relying on the brief for that.

[00:12:22] Speaker 00:
Joint appendix, a huge section of it, and primarily it's volume two, which you can see in my copy has tabs for Eccerson and very little else, was included in the joint appendix at the director's request.

[00:12:35] Speaker 00:
It's the roughly 1,000 page ex parte re-exam petition and then was cited for nothing else as far as I can tell in the briefing.

[00:12:44] Speaker 00:
And as such, the cost of that to get that done and to get the 10 copies made, copies for the court, copies for us, copies for opposing counsel,

[00:12:52] Speaker 00:
We would ask that the cost of that section be shifted to the examiner.

[00:12:56] Speaker 03:
The re-exam request included the prior art references, right?

[00:13:00] Speaker 03:
So there's nothing wrong with including the prior art references in the joint appendix.

[00:13:05] Speaker 03:
In fact, it's probably mandatory.

[00:13:08] Speaker 00:
And there's absolutely nothing wrong with it.

[00:13:09] Speaker 00:
And I think we make it clear in our brief.

[00:13:11] Speaker 03:
So that part you're not concerned about.

[00:13:13] Speaker 00:
That's correct, Your Honor.

[00:13:15] Speaker 00:
And if it's not clear in our brief, I'll make it clear now we're not.

[00:13:18] Speaker 03:
asking that the cost of that initiative... And the examiner's answer is okay, right?

[00:13:21] Speaker 03:
The examiner's answer ought to be part of the Joint Appendix.

[00:13:24] Speaker 00:
Correct, Your Honor.

[00:13:24] Speaker 00:
It's primarily what pervades Volume 2, the petition for Expo.

[00:13:29] Speaker 03:
The re-exam request, the content of the request itself.

[00:13:33] Speaker 00:
Correct, Your Honor, which is a little over a thousand pages.

[00:13:37] Speaker 03:
But that's including the prior art references.

[00:13:40] Speaker 03:
I don't think that includes the prior art references, but again... The re-exam request is something like, I don't know,

[00:13:46] Speaker 03:
250 pages, then there's a claim chart.

[00:13:50] Speaker 03:
It's like 325 pages.

[00:13:52] Speaker 00:
Yeah, by my count, Your Honor, the re-exam request, the narrative portion, yeah, it's 226 pages, and then it has charts that run from JA 4342 to JA 4666.

[00:14:14] Speaker 00:
I guess that's 324 pages of charge.

[00:14:18] Speaker 00:
So it's roughly 500 pages.

[00:14:20] Speaker 00:
I may have had my math wrong.

[00:14:21] Speaker 00:
I apologize, Your Honor.

[00:14:26] Speaker 02:
OK, we'll save some time and restore some time for rebuttal.

[00:14:29] Speaker 00:
Thank you.

[00:14:29] Speaker 02:
Thank you, Mr. Gilliland.

[00:14:31] Speaker 02:
Mr. Lamarca, please proceed when you're ready.

[00:14:40] Speaker 04:
To start out with the merits,

[00:14:43] Speaker 04:
I understand the court was concerned that there were multiple references here for the obviousness rejection, that there were five references.

[00:14:50] Speaker 04:
Well, keep in mind, it really isn't as many references as it appears.

[00:14:56] Speaker 04:
What you've got is Eccerson, the fundamental base reference, which shows three-tier network architectures were well-known.

[00:15:03] Speaker 02:
That's the reason that... You say that they were well-known?

[00:15:06] Speaker 02:
It certainly discloses the three-tier architecture, but I don't see where it says in them, in Eccerson itself, that they were well-known.

[00:15:12] Speaker 02:
Am I missing disclosure in Eccerson?

[00:15:15] Speaker 04:
Well, not only did the agency rely on Eccerson, but they also had Cameron and Weiss that also showed a three-tier architecture, Your Honor.

[00:15:22] Speaker 02:
Furthermore, I believe... Cameron and Weiss aren't part of this rejection.

[00:15:26] Speaker 02:
No, but... So why don't we just focus on this record and this rejection?

[00:15:30] Speaker 04:
But you asked me, Your Honor, respectfully, you asked me what establishes that they're well-known.

[00:15:35] Speaker 04:
and the agency made a determination.

[00:15:36] Speaker 02:
And you're saying what establishes that they're well-known are something outside the scope of this record?

[00:15:40] Speaker 04:
No, I'm not.

[00:15:41] Speaker 04:
It's all within this record, Your Honor.

[00:15:44] Speaker 04:
In this record, if you look at the board decision, there are three rejections made by the examiner.

[00:15:49] Speaker 04:
The middle rejection is the Eccerson-based rejection, which shows it's known, well-known, to have a three-tiered architecture at the time Apple can file their application.

[00:15:57] Speaker 02:
I don't understand.

[00:15:58] Speaker 02:
Is there something in Eccerson that says it's well-known, as opposed to simply disclosing it?

[00:16:02] Speaker 04:
Okay.

[00:16:03] Speaker 02:
Because they don't just disclose it.

[00:16:04] Speaker 02:
Eckerson goes on to say building three-tier architectures isn't easy, and there is relatively little real-world experience to shed light on the process.

[00:16:13] Speaker 02:
That seems like the opposite of well-known.

[00:16:15] Speaker 02:
That seems like an acknowledgement that it is relatively new and untested.

[00:16:19] Speaker 04:
I think at the time when Eckerson was published, it was a newer thing, but it was known.

[00:16:24] Speaker 04:
Because prior to the filing of the application, which is the critical date here, Your Honor, the filing of the application, at that point,

[00:16:31] Speaker 04:
There are multiple pieces of prior art and multiple pieces of evidence that established three-tiered architecture was well-known.

[00:16:37] Speaker 04:
You're right.

[00:16:38] Speaker 04:
Eccerson says at the time it was published, three-tiered architecture was a new thing.

[00:16:42] Speaker 04:
It had been done.

[00:16:43] Speaker 04:
People in the computer world knew about it, and they were actually encouraging people to use it because there were advantages of three-tier architecture for growing organizations.

[00:16:51] Speaker 04:
That's what our brief says.

[00:16:52] Speaker 04:
That's what the board decision says.

[00:16:54] Speaker 04:
That's what the examiner's final rejection says.

[00:16:56] Speaker 04:
So to clarify,

[00:16:58] Speaker 04:
You're correct that Eccerson talks about the developmental aspects of that architecture, but that's known.

[00:17:05] Speaker 04:
That is prior to the filing date of patentee's application.

[00:17:12] Speaker 04:
So if Eccerson shows that, that three tiered architectures were known, all that's left is what about this scanning and digitizing of financial documents or checks or credit card information?

[00:17:27] Speaker 04:
GEER is the secondary reference that the agency relies on for that teaching.

[00:17:31] Speaker 04:
As you mentioned earlier, GEER shows the scanning of checks in a computer network.

[00:17:35] Speaker 04:
You can scan it at a remote location just like the claims require.

[00:17:39] Speaker 04:
You can digitize that information.

[00:17:40] Speaker 04:
It can be transmitted and it can be transmitted to, for example, the headquarters at a bank.

[00:17:45] Speaker 04:
So it shows computer networks.

[00:17:48] Speaker 04:
It shows scanning.

[00:17:49] Speaker 04:
The only question then is would you combine, would an ordinary arts and know to combine the scanning of checks like the technology that's disclosed in GEER

[00:17:56] Speaker 04:
with a three-tier architecture.

[00:17:58] Speaker 04:
The agency, the examiner, as well as the board determined that there was a sufficient rationale to support that combination.

[00:18:05] Speaker 04:
We've cited that in multiple places throughout our brief.

[00:18:08] Speaker 04:
And one point that I think opposing counsel raised was I think at A525, I think, is what he cited.

[00:18:17] Speaker 02:
And that shows... Wasn't the argument for what the motivation to combine... Yeah, that's where I'm going to take you to, Your Honor.

[00:18:23] Speaker 02:
Because you have to combine Eccerson, Dilella, for example, for claim 42.

[00:18:28] Speaker 02:
Right.

[00:18:28] Speaker 02:
You have to show me why someone would be motivated to combine Eccerson, an element from Eccerson, a three-tiered architecture, with an element from Dilella, with an element from Hooverner, with an element from Gere, with an element, or with some aspects of the background of the 90s.

[00:18:42] Speaker 04:
Let's make it a little simpler than that, Your Honor.

[00:18:44] Speaker 04:
Eccerson shows three-tier architecture, Gere shows scanning checks, and a computer network environment.

[00:18:51] Speaker 04:
All we need, Dilella,

[00:18:52] Speaker 04:
and Hoover for is just to show that local area networks and wide area networks were known.

[00:18:57] Speaker 04:
Eckerson already shows networking.

[00:18:59] Speaker 04:
It already shows that the first tier and the second tier and the third tier communicate with each other via networks.

[00:19:04] Speaker 04:
It just doesn't expressly say the type of networking.

[00:19:07] Speaker 04:
Local area networks, wide area networks were well known, as disclosed by Dylella and Hoover.

[00:19:13] Speaker 04:
They're only there for that purpose.

[00:19:14] Speaker 04:
In fact, the examiner in this case went back to the original re-exam request.

[00:19:19] Speaker 04:
And the reason that we included the request is in part

[00:19:22] Speaker 04:
to help have this background in the case, the requester, or the requester didn't include Dilella and Hoover.

[00:19:27] Speaker 04:
They just said, hey, here's Eccerson.

[00:19:29] Speaker 04:
It shows three tier architectures.

[00:19:31] Speaker 04:
They're networked together.

[00:19:32] Speaker 04:
And here's GEER.

[00:19:33] Speaker 04:
Combine the two.

[00:19:35] Speaker 04:
The examiner said, hey, I see all that.

[00:19:37] Speaker 04:
And I understand that Eccerson does show networking.

[00:19:39] Speaker 04:
But just to make sure, because Eccerson doesn't expressly state lands and lands, local area networks and wide area networks, I'm going to go show you that those were well known as well.

[00:19:49] Speaker 04:
Here's Dilella.

[00:19:50] Speaker 04:
Here's Hoover.

[00:19:50] Speaker 04:
So that's the only reason that there are.

[00:19:52] Speaker 04:
So it's really not that hard to get through this obviousness rejection.

[00:19:55] Speaker 04:
So I don't want to mischaracterize it as being some very difficult picking and choosing of elements, because that's not what's going on.

[00:20:01] Speaker 02:
No, but it is, because each of those elements is required for this claim.

[00:20:05] Speaker 02:
You don't just need a three-tier architecture, which is all that's disclosed in Ericsson, right?

[00:20:09] Speaker 02:
You need the financial application, the check scanning, which is disclosed in a different reference.

[00:20:14] Speaker 02:
You need the local area network to connect

[00:20:17] Speaker 02:
The tiers are within each tier, and then you need the wider network to connect the tiers.

[00:20:21] Speaker 02:
Each of those is an element of, for example, Claim 42.

[00:20:25] Speaker 02:
Let me take you to page- What am I missing?

[00:20:29] Speaker 02:
I understand you're acting as though, oh, we didn't really need all these references.

[00:20:34] Speaker 04:
You know, Your Honor, I'm not acting that way.

[00:20:35] Speaker 04:
Let me clarify for you.

[00:20:36] Speaker 04:
And if you felt that I was acting that way, let me clarify for you.

[00:20:39] Speaker 04:
Let's go to page 4670 of the appendix.

[00:20:42] Speaker 04:
4670 of the appendix is the Eccerson disclosure.

[00:20:46] Speaker 04:
That's what I was discussing.

[00:20:49] Speaker 04:
And what you see there is a picture.

[00:20:52] Speaker 04:
It shows three-tier architecture.

[00:20:53] Speaker 04:
It shows a top tier, which is a bunch of desktop computers linked together in a network.

[00:21:00] Speaker 04:
There's a middle tier showing servers, multiple servers linked together in a network and also linked to the top tier.

[00:21:06] Speaker 04:
And they show a bottom tier, mainframe computers linked together in a network.

[00:21:11] Speaker 04:
You've already got networking disclosed.

[00:21:13] Speaker 04:
The concept of local area networks and wide area networks are not expressly mentioned here, but networking is disclosed as part of Eccerson.

[00:21:21] Speaker 04:
Where?

[00:21:22] Speaker 04:
Do you see those links together, how they're all connected?

[00:21:24] Speaker 02:
Where's the word network?

[00:21:25] Speaker 02:
Well, this is a... So does the word network appear anywhere in the Eccerson network?

[00:21:29] Speaker 04:
Yes, it does.

[00:21:30] Speaker 02:
Where?

[00:21:30] Speaker 04:
Page 4669.

[00:21:31] Speaker 04:
Okay.

[00:21:32] Speaker 04:
Right in the middle of the page.

[00:21:35] Speaker 04:
You see where it says a deployment architecture, that paragraph?

[00:21:38] Speaker 04:
Yes.

[00:21:38] Speaker 04:
The fourth line down, it says across a network.

[00:21:41] Speaker 04:
It also says on page, there's other pages in here as well that say that if you go to page 4673, let me get you the sites, page 4675, I'm sorry, your honor, 4675, it mentions network.

[00:21:59] Speaker 04:
If you go halfway down the page where the paragraph begins, consider, for example, a company that wants to migrate part of a network.

[00:22:08] Speaker 04:
If you go to the very top of that page, 4675,

[00:22:11] Speaker 04:
Intermediate servers can also support communication gateways if you go four lines down, data stores across a network.

[00:22:18] Speaker 04:
There's no dispute that Eccerson discloses networking.

[00:22:22] Speaker 04:
It's three-tier networking.

[00:22:23] Speaker 04:
Obviously, a network is a physical connection of computers so they can talk to each other.

[00:22:28] Speaker 04:
And the way that's done is if it's locally here in our courtroom, for example, if you and I have a computer and we connect them together, that is, by definition, a local network.

[00:22:37] Speaker 04:
If then we link that local network to go beyond that to some other network,

[00:22:41] Speaker 04:
that would be deemed a wide area network.

[00:22:43] Speaker 04:
So all the examiner did was he said, here's Dylella, here's Houtner, they expressly disclosed local area networks and wide area networks.

[00:22:51] Speaker 02:
Neither of which are expressly disclosed in Erickson, correct?

[00:22:54] Speaker 04:
Correct, and that's why he did it.

[00:22:56] Speaker 04:
He did it to satisfy your concern that you're expressing right now that Eccerson doesn't use the exact words, local area network or wide area network.

[00:23:04] Speaker 01:
So what he did, although it's when you know what it means,

[00:23:09] Speaker 04:
it the the Anderson discloses correct your honor that's our view that's the view that I'm trying to advance right now and I'm trying to have judge more feel comfortable with that because I understand her questions those are legitimate questions I'm trying to help you answer them that there is a network disclosed in Eccerson and Eccerson shows the linking of computers both locally and beyond the local and that express language of local area networks lands and wands which are terms of art in the field

[00:23:39] Speaker 04:
are shown that they're very well known in Dilella and Hoovener.

[00:23:42] Speaker 04:
That's why the examiner cited them.

[00:23:43] Speaker 02:
OK, but just to be clear, the board did not make a fact finding that Eccerson discloses or that one of skill in the art would know based on Eccerson that these combinations of computers can exist in Eccerson, in lands or wands, correct?

[00:24:00] Speaker 02:
There's no fact finding by the board that Dilella and Hoovener, they're just icing on the cake.

[00:24:07] Speaker 02:
You know, really, Echerson tells you everything that a skilled artisan would need to know.

[00:24:12] Speaker 02:
You're trying to make that argument to us.

[00:24:14] Speaker 02:
A skilled artisan would know, since it discloses networks, which I thank you for pointing out to me.

[00:24:19] Speaker 02:
Very clearly, it does.

[00:24:20] Speaker 02:
You clearly know your record well.

[00:24:21] Speaker 02:
That's very helpful to the court.

[00:24:25] Speaker 02:
I don't understand the board as having found what you're sort of arguing now, and what Judge Walthick seemed to almost agree with now, which is that Eckerson, yeah, it kind of has everything.

[00:24:35] Speaker 02:
A skilled artisan would know networks can be connected through lands or wands, and Deleuze and Hoover are just gloss.

[00:24:41] Speaker 02:
They're just two maraschino cherries in a Shirley Temple instead of one.

[00:24:47] Speaker 01:
I didn't say that.

[00:24:48] Speaker 01:
Well, no.

[00:24:50] Speaker 04:
I said they were definitional.

[00:24:52] Speaker 04:
Let me, Your Honor, let me first start out by agreeing with you, OK?

[00:24:55] Speaker 04:
You're correct.

[00:24:56] Speaker 04:
And I agree with you.

[00:24:57] Speaker 04:
The board did not agree.

[00:24:59] Speaker 02:
You can just sit down now, because you've never said that to me before.

[00:25:02] Speaker 04:
Well, I'm trying to show you that I do.

[00:25:05] Speaker 04:
I'm trying to show you that I agree.

[00:25:06] Speaker 04:
But the board did indeed, if you go to page 15 of the board decision, once again, let's go back to the record and figure out what the board said.

[00:25:12] Speaker 04:
Let's not figure out what Mr. Lamarca has to say, OK?

[00:25:15] Speaker 04:
If you go back to the board decision, page 15, it's JA 15.

[00:25:19] Speaker 04:
It's also 15, the board decision.

[00:25:21] Speaker 04:
Right in the middle, it says, next we turn to the arguments concerning Dylella.

[00:25:25] Speaker 04:
The examiner finds that Eccerson teaches networks for transmitting data within subsystems and between subsystems.

[00:25:35] Speaker 04:
Within subsystems is what I was trying to say earlier, are commonly known as local networking.

[00:25:41] Speaker 02:
That will be a LAN.

[00:25:43] Speaker 02:
So there's a line.

[00:25:45] Speaker 02:
board go on to say, however, Eccerson does not teach explicitly that the communication networks within one system include a LAN as recited.

[00:25:53] Speaker 04:
Correct.

[00:25:54] Speaker 02:
Dilella cures this deficiency.

[00:25:56] Speaker 04:
And I apologize, Your Honor, that's what I tried to say earlier.

[00:25:58] Speaker 04:
The examiner recognized and the board recognized that it doesn't explicitly use LAN or WAN and therefore the examiner went off and found Dilella and Hoover to fill that

[00:26:09] Speaker 04:
that express language that was missing from here.

[00:26:11] Speaker 04:
But nevertheless, the board indeed and the examiner both made findings.

[00:26:15] Speaker 04:
And they based on evidence, Eccerson's disclosure, that there's definitely networking.

[00:26:20] Speaker 04:
Networking between local computers and network between other computers that are geographically dispersed.

[00:26:24] Speaker 02:
To be clear, I don't think that I understand Mr. Gilliland or data treasury to dispute the fact, and I might be wrong, but I don't think I understand him, to dispute the fact that each of these references

[00:26:37] Speaker 02:
discloses an element that is within the claims I understand his primary dispute to be that there's no motivation to take such a large number of references and smush them all together to make this exact claimed combination and you know that's something that's kind of the whole thing right I mean every

[00:26:57] Speaker 02:
There's only so many elements.

[00:26:59] Speaker 02:
Every chemical composition is a combination of existing elements.

[00:27:02] Speaker 02:
That doesn't make them all obvious.

[00:27:04] Speaker 02:
So what is the motivation for somebody to take a three-tiered network, which is, quote, still immature and doesn't provide services to support a distributed computing network environment?

[00:27:14] Speaker 02:
Ericsson is the only reference relied on in most of these rejections for the three-tiered network.

[00:27:20] Speaker 02:
And Erickson itself goes on and on in a whole paragraph talking about how building these architectures isn't easy.

[00:27:26] Speaker 02:
There's little real world experience.

[00:27:29] Speaker 02:
These tools are still immature and don't provide all the services needed to support a distributed computing environment.

[00:27:35] Speaker 02:
So that's what we know from Erickson about three tiers.

[00:27:37] Speaker 02:
And it has nothing to do with processing financial transaction data, for example.

[00:27:42] Speaker 04:
Well, actually, Your Honor, it does.

[00:27:44] Speaker 02:
OK.

[00:27:45] Speaker 04:
Eccerson does talk about the transmission

[00:27:47] Speaker 04:
of financial information.

[00:27:49] Speaker 04:
For example, Eccerson can be applied to bank tellers.

[00:27:51] Speaker 04:
It says it right in Eccerson.

[00:27:53] Speaker 04:
Eccerson can be used for financial transactions.

[00:27:56] Speaker 04:
It says it right in Eccerson.

[00:27:57] Speaker 04:
And Eccerson also says, which we didn't mention yet, that it's advantageous to have a three-tier network.

[00:28:02] Speaker 04:
That's the whole purpose of the Eccerson publication was the computer industry.

[00:28:07] Speaker 02:
Well, the purpose was to discuss, because it tells us what the purpose is, to discuss the advantages and challenges of utilizing a three-tiered network.

[00:28:14] Speaker 04:
OK, I agree, Your Honor.

[00:28:15] Speaker 04:
But those advantages are the reasons why the examiner relied upon and the board relied upon why an ordinary artisan would want to use Eccerson with something like GEER.

[00:28:25] Speaker 04:
And GEER, what was GEER?

[00:28:27] Speaker 04:
GEER was scanning checks, digitizing the scanned information, transmitting the scanned information over a network, albeit not a three-tier network like Eccerson.

[00:28:35] Speaker 04:
That's what it was.

[00:28:36] Speaker 04:
But an ordinary skilled artisan in that business, let's say a banking entity that wanted to have check scanning and financial documents scanned, Eccerson goes on to say, by the way,

[00:28:46] Speaker 04:
Organizations like yours that have a network would benefit by stepping up to a three-tier network.

[00:28:52] Speaker 04:
Why?

[00:28:52] Speaker 04:
Because three-tier networks help you with scalability, with security, with all the things we're concerned about in this invention.

[00:28:59] Speaker 04:
That's what Eccerson's about.

[00:29:01] Speaker 02:
Can you tell me precisely what does the board say is the motivation to combine these three things?

[00:29:07] Speaker 04:
I think the board does agree with the examiner's rationale is what the board says.

[00:29:12] Speaker 04:
The board says we agree with the examiner's rationale.

[00:29:15] Speaker 04:
And let me see if I can find that for you, Your Honor.

[00:29:20] Speaker 04:
For example, I mean, there are multiple places where they reference it, but at page A18 of the board decision, I'll read for you the section that I can find it for you here.

[00:29:37] Speaker 02:
Well, they say the examiner is provided a persuasive reason

[00:29:41] Speaker 02:
i.e.

[00:29:42] Speaker 02:
increasing efficiency over previous manual methods of inputting data.

[00:29:46] Speaker 04:
Correct.

[00:29:47] Speaker 04:
And that's precisely the purpose of GEER.

[00:29:50] Speaker 04:
GEER was also to bypass the manual methods of previously trying to deposit a check with a bank.

[00:29:57] Speaker 04:
GEER said, hey, you don't have to do this manually.

[00:29:59] Speaker 04:
You don't have to fill out pieces of paper and documents and try to get it all shipped to your bank.

[00:30:04] Speaker 04:
You can scan it at your remote bank teller location or at your remote spot where you get your check, scan it in, digitize it,

[00:30:10] Speaker 04:
transmit it over, it'll end up at your bank, the bank will end up paying the check, it'll all happen remotely.

[00:30:16] Speaker 04:
That's the idea here.

[00:30:17] Speaker 04:
Now all Eccerson does is get you to the next step.

[00:30:20] Speaker 04:
Would that be beneficial to have that in the environment of a three-tier network?

[00:30:23] Speaker 04:
And yes, it would.

[00:30:24] Speaker 04:
So not only does the examiner here just talk about the benefits of replacing manual methods, but further if we read throughout the whole board decision, if we read through the whole examiner's answer, all the different places where this comes up, the examiner repeatedly found, and the board did

[00:30:40] Speaker 04:
confirm this, that it was the benefit of the three tier network, scalability, security, transmission.

[00:30:47] Speaker 04:
When they say scalability, they mean when an organization grows and they have more and more and more terminals, it's much easier to do that with a three tier network than with a two tier or one tier network.

[00:30:56] Speaker 04:
So these are across the board computer networking advantages that apply not just to the gear type of network,

[00:31:03] Speaker 04:
But all that works.

[00:31:04] Speaker 04:
That's what's going on.

[00:31:04] Speaker 02:
Mr. Lamarca, your time is up, but I do want to give you a chance to address the motion that was made for costs related to the production of the appendix.

[00:31:14] Speaker 02:
Can you tell us why it's not normal in my experience?

[00:31:20] Speaker 02:
to see an entire third party re-examination request in an appendix.

[00:31:26] Speaker 02:
That's my personal experience.

[00:31:28] Speaker 02:
I don't normally see that and it's hard for me to understand why it would have been necessary because it included at least 500 pages of material

[00:31:38] Speaker 02:
that really wasn't cited in any of the briefs.

[00:31:43] Speaker 02:
That's a lot.

[00:31:43] Speaker 02:
I certainly understand the prior art, and I believe that wisely Mr. Gilliland immediately backed down from any claim that the prior art shouldn't have been included.

[00:31:54] Speaker 02:
But what about all of the rest of that?

[00:31:58] Speaker 02:
I mean, was it just an oops, like, oh, we didn't realize how big it was?

[00:32:00] Speaker 02:
Because look, if it had been eight pages, you could have just slipped it right in, and nobody would have cared.

[00:32:04] Speaker 02:
But here was 500 pages, and it represented

[00:32:06] Speaker 02:
like $3,000 of cost.

[00:32:08] Speaker 04:
It wasn't an oops, your honor.

[00:32:10] Speaker 04:
We put it in.

[00:32:11] Speaker 04:
I put it in, and I'll tell you why.

[00:32:12] Speaker 04:
I mean, I want to take responsibility.

[00:32:14] Speaker 04:
I made the decision that I thought it belonged in there.

[00:32:16] Speaker 04:
I talked to some other people in our office before I did it.

[00:32:19] Speaker 04:
The reason is, in this particular case, which is a little different than other cases, in this case, the examiner, in his office actions, he had first he had a non-final office action, then he had a final office action.

[00:32:29] Speaker 04:
In both those office actions, and we point this out in our opposition so I won't bore you with

[00:32:34] Speaker 04:
the myriad of citations, but it's in our opposition.

[00:32:38] Speaker 04:
He adopted the rationales of the requester, but he didn't reiterate those rationales specifically in his office action.

[00:32:45] Speaker 04:
Because he adopted, adopted, adopted over and over and over again, I felt the evidentiary record was supported by those documents.

[00:32:52] Speaker 04:
That's why they're there.

[00:32:53] Speaker 02:
Now, in addition to the final rejection... But why didn't you only take selected pages?

[00:33:01] Speaker 02:
Because I actually tracked down, I made my clerk go through,

[00:33:04] Speaker 02:
And do, the adoption records.

[00:33:07] Speaker 02:
And what we found was it wasn't very many pages that he relied upon and adopted the rationale of the re-examination requester.

[00:33:15] Speaker 02:
In each instance, it was like two or three pages of information that the re-exam requester had articulated.

[00:33:22] Speaker 02:
We often, from you all, routinely get portions of office actions, portions of responses.

[00:33:28] Speaker 02:
Only the pages that are really relevant to understand what's going on

[00:33:32] Speaker 02:
But here you sort of lumped the whole thing in.

[00:33:34] Speaker 02:
And even if I very graciously track down the way you asked me to, that you didn't necessarily do for us, but I nonetheless made my clerks do, you're still talking about hundreds and hundreds of pages that nobody could argue were relevant to his deliberative or adjudicative process.

[00:33:53] Speaker 04:
Well, Your Honor, if you go through the request, and I've got it right in front of me, claim 42, claim 46, and the remaining claims,

[00:34:00] Speaker 04:
He did adopt those rationales.

[00:34:02] Speaker 04:
Those rationales aren't just one page.

[00:34:04] Speaker 04:
Yes, on one page he does say, I adopt the rationale.

[00:34:07] Speaker 04:
But then if you go to the request where that rationale is, it's done through many pages.

[00:34:12] Speaker 04:
Furthermore, there's a claim chart that corresponds to that language that also has those rationales.

[00:34:16] Speaker 04:
So we included the claim charts.

[00:34:18] Speaker 04:
The point was, and I understand it's large.

[00:34:20] Speaker 04:
I understand it's big, bigger than normal.

[00:34:22] Speaker 04:
But the point was, we wanted the evidentiary record to be complete because the examiner adopted it.

[00:34:27] Speaker 04:
The final rejection said that.

[00:34:29] Speaker 04:
The examiner's answer specifically says he relies on all of the things that are in his final rejection.

[00:34:35] Speaker 04:
In other words, he didn't reiterate in the answer.

[00:34:37] Speaker 04:
And then the board even said, we rely on the examiner's answer and the final rejection.

[00:34:42] Speaker 04:
So even the board's decision specifically incorporated and referred to the examiner's answer and the final rejection and those rationales and reasons.

[00:34:51] Speaker 04:
So my point was I felt it was important to include the request in order to support the underlying evidence from those.

[00:34:58] Speaker 04:
But you're correct.

[00:34:59] Speaker 04:
If we really scoured through it, I think we could probably find places to take pages out.

[00:35:03] Speaker 04:
But in order to give you context, we included the whole thing.

[00:35:06] Speaker 04:
That's what we did.

[00:35:08] Speaker 04:
That was the reason.

[00:35:11] Speaker 04:
And I think the rest of what we have to say is in our opposition.

[00:35:14] Speaker 04:
I don't think I need to add to any further.

[00:35:16] Speaker 04:
Thank you.

[00:35:17] Speaker 02:
Thank you, Mr. Lamarca.

[00:35:18] Speaker 02:
I appreciate how incredibly thorough and well-prepared you were on the facts.

[00:35:22] Speaker 02:
So thank you for helping the court.

[00:35:24] Speaker 02:
Thank you for the questions.

[00:35:25] Speaker 02:
Mr. Gilliland?

[00:35:27] Speaker 02:
A few minutes of rebuttal time.

[00:35:30] Speaker 00:
And I will do my best to make this brief, Your Honor.

[00:35:33] Speaker 00:
I just wanted to respond to a couple specific comments from the director, from Mr. Lamarca.

[00:35:41] Speaker 00:
And the first being that they didn't need all these references to teach the claim elements.

[00:35:46] Speaker 00:
I think that's belied by the fact that when the office gets to the claims that required, for example, frames, that the data be packeted into frames.

[00:35:57] Speaker 00:
The examiner reached out and cited two additional references that post-date the patent application to demonstrate TCPIP using frames.

[00:36:06] Speaker 00:
Similarly, they pointed to TCPIP to invalidate additional claims that required remote data processing subsystem identification information, that being claims, I think it's 84 and 88 to 92, and identifying one remote subsystem used by a customer.

[00:36:26] Speaker 00:
in claim 122 again had to point to additional references to satisfy those additional elements of those claims.

[00:36:33] Speaker 00:
So it's not just an Eccerson and a Gere answer to this thing where everything else is just sort of filler.

[00:36:40] Speaker 00:
It took a lot of references to make the obviousness rejection.

[00:36:44] Speaker 00:
And then the only other comment that I wanted to address was the, with regard to the motivation to combine that Eccerson somehow points to financial and bank teller

[00:36:56] Speaker 00:
information and how these three tier networks can be used in those situations is the first.

[00:37:06] Speaker 00:
Here we go.

[00:37:07] Speaker 00:
First, the reference to bank teller is simply a passing reference under a section that's discussing how to build applications within the architecture.

[00:37:18] Speaker 00:
It's called application architecture.

[00:37:19] Speaker 00:
Subheading under that is objects extend decomposability.

[00:37:24] Speaker 00:
And in the middle of the paragraph, and this is at JA4673, there's a sentence, it's the third paragraph on that page, says, for example, an object might be a radio button on a GUI, G-U-I, or an account summary command in a bank teller application.

[00:37:42] Speaker 00:
That's it.

[00:37:42] Speaker 00:
That's the only reference to bank teller.

[00:37:44] Speaker 00:
In the middle of a paragraph discussing object-oriented programming.

[00:37:47] Speaker 00:
The next reference is as it drops down into three-tier deployment architecture,

[00:37:53] Speaker 00:
The first paragraph, same page, JA4673, first paragraph under that section is talking about enterprise applications often require three tiers.

[00:38:04] Speaker 00:
And the last sentence of that says, by enterprise, we mean applications that support core operational systems that run the company, such as order entry, inventory, distribution, and finance.

[00:38:15] Speaker 00:
Again, merely a passing reference in a reference or a prior article

[00:38:21] Speaker 00:
that discusses the problems, the shortcomings, and how much work is yet to be done before three-tier architecture, in our opinion, becomes well-known and well-used by any other than a person of extraordinary skill in the art.

[00:38:35] Speaker 00:
And unless your honors have any questions, I'll see the rest of our time.

[00:38:40] Speaker 02:
Okay.

[00:38:40] Speaker 02:
I thank both counsels for the argument.

[00:38:42] Speaker 02:
The case is taken under submission.